What Does a Trade Mark Attorney Do?

In Short

• Trade mark attorneys are IP law experts registered with the Trans-Tasman IP Attorneys Board, offering specialised knowledge in brand protection.

• They assist with trade mark registration, enforcement, licensing, opposition proceedings and international protection strategies.

• Unlike lawyers, trade mark attorneys do not represent clients in court unless they also hold a law degree.

Tips for Businesses

Engaging a trade mark attorney can safeguard your brand by ensuring proper registration and protection strategies. Their specialised knowledge helps navigate complex IP laws, reducing the risk of disputes. If your business operates internationally, consider a trade mark attorney for global brand protection.

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Table of Contents

• What Qualifications Does a Trade Mark Attorney Have?
• How Are They Different to Lawyers?
• What Can a Trade Mark Attorney Advise You On?
• How Do You Know if You Should Engage a Trade Mark Attorney?
• Key Takeaways
• Frequently Asked Questions

The alternating use of ‘attorney’ and ‘lawyer’ often causes confusion, especially given their interchangeable use in popular media. However, in Australia, the only proper use of the term ‘attorney’ is in reference to trade mark or patent attorneys. These specialists possess specific qualifications in intellectual property (IP) law, distinguishing them from general lawyers. Unlike lawyers, trade mark attorneys do not represent clients in court, but their expertise is crucial for navigating IP matters. This article will explore when engaging a trade mark attorney might be the best choice for addressing your IP legal needs.

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What Qualifications Does a Trade Mark Attorney Have?

While many trade mark attorneys hold legal qualifications that enable them to practice general law, this is not necessarily required for the role. The essential requirement for becoming a trade mark attorney is passing rigorous examinations specifically focused on trade mark law. This specialised training ensures that trade mark attorneys possess in-depth knowledge of intellectual property matters, which they can use in conjunction with their broader legal backgrounds.

How Are They Different to Lawyers?

Unlike lawyers, attorneys do not necessarily need a law degree, such as a Bachelor of Laws or a Juris Doctor. However, you will likely find that many trade mark attorneys have both. Instead, they are required to have much more specialised training in intellectual property.

Additionally, attorneys fall within a separate regulatory and disciplinary action system than lawyers. Furthermore, a separate professional code of conduct outlines the rigorous responsibilities that they are subject to.

What Can a Trade Mark Attorney Advise You On?

Trade mark attorneys can assist with a wide variety of matters, including:

• brainstorming and advising on advanced brand protection strategies;
• advising on the use of trade marks;
• preparing trade mark applications;
• licensing the use of your trade marks;
• assigning trade mark ownership;
• enforcing trade marks in Australia or overseas;
• drafting trade mark agreements;
• advising on trade mark infringement;
• advising and assisting with related IP issues (e.g. searching patent and trade mark registers for potential conflicting applications);
• opposing others’ trade marks; and
• acting in trade mark opposition proceedings.

A trade mark or commercial lawyer can also undertake some of these tasks. However, the exclusive nature of a trade mark attorney’s specialisation may give some clients additional peace of mind.

Trade mark attorneys typically focus exclusively on intellectual property matters, unless they also hold qualifications as lawyers. Their expertise is concentrated in IP law, with a particular emphasis on how it intersects with commercial law. This specialisation makes them invaluable for addressing niche trade mark questions and navigating complex IP issues. While they may not practice in areas like criminal law, their in-depth knowledge of trade mark matters often streamlines the process of protecting and managing intellectual property. Their focused expertise can significantly simplify what might otherwise be a complex legal journey for businesses and individuals dealing with trade mark concerns.

How Do You Know if You Should Engage a Trade Mark Attorney?

Trade mark attorneys have highly specialised knowledge of trade mark law and its relationship to other areas of law, such as:

• designs;
• copyright;
• trade practices; and
• general commercial law.

If you are facing the prospect of court proceedings, engaging a litigation lawyer is often the more appropriate choice. Lawyers receive specific training in court procedures, equipping them to represent clients effectively in legal proceedings. However, it is worth noting that some trade mark attorneys also hold legal qualifications. If your trade mark attorney is also a qualified lawyer, they may be able to assist you with disputes and court proceedings.

Key Takeaways

Trade mark attorneys are highly specialised professional advisors with extensive knowledge of all things concerning trade marks. Therefore, you should consider engaging a trade mark attorney to provide expert advice, mainly if any complex issues are involved. 

If you have a specialised trade mark law issue and would like professional advice, LegalVision’s experienced trade mark attorneys can assist as part of our LegalVision membership. You will have unlimited access to lawyers to answer your questions and draft and review your documents for a low monthly fee. Call us today on 1300 544 755 or visit our membership page.

Frequently Asked Questions